To identify a right holder of the trademark – how to do it and what it is for
According to Rospatent, in Russia, starting since 2014, at least 60 thousand applications for the registration of trademarks are filed annually, and in 2018, this figure reached the mark of 76,062 trademarks. All these designations have their right holder, and some of them are also used by other legal entities on the basis of the license or franchise agreement.
Article 1485 of the Civil Code of the Russian Federation, which states that the trademark is registered and protected in accordance with the norms of the Russian legislation, testifies that the designation consists: “...of the Latin letter “R” or of the Latin letter “R” being in a circumference or of the word designation ”trademark” or “registered trademark.” At the same time, it is indicated in the Civil Code that the holder of a means of individualization is entitled to place the said certifying mark, and, therefore, affixing such designation is not a mandatory procedure. At the first glance, it seems that it is easy to identify the right holder of the trademark, because the package contains a reference to the manufacturer that is likely possessing the trademark. However, this is not the case, due to the prevalence of an integrated manufacture of the products. In this case, the raw materials are obtained by one company, the package is manufactured by another company, and the product is assembled into a whole piece by a third company. In this case, it is permissible to mention several companies on the package, while it is quite unnecessary for one of them to be the right holder of the trademark, for example, if the designation is used on the basis of the license agreement.
Why it will be necessary to identify a right holder of the trademark
The cases, in which the information about the holder of the designation will be useful are usually as follows:
- Before filing an application for the registration of a trademark, when the applicant plans to register the designation that is confusingly similar or identical to the protected trademark used to individualize the homogeneous products and services. According to a general rule, such registration is prohibited. The exceptions are the cases, when the applicant receives a letter of consent to the registration of the designation from the current right holder.
- When the company wishes to use the registered “someone else's” trademark to mark the homogeneous products. For this purpose, the license agreement or the franchise agreement is concluded with the holder of the exclusive rights.
- If some legal entity has decided to obtain the protected trademark and to become a full and exclusive holder of the designation by concluding an alienation agreement with the original right holder of the trademark.
- In the case, when the right holder turns to the company with a proposal to conclude the license agreement to the use of the designation belonging to it. As a confirmation of the authority of the entity that has offered to carry out the transaction, it is advisable to identify the right holder of the trademark independently.
- The need to register the trademark is due to the consequences of the said action: certifying the exclusive rights of the holder and confirming the uniqueness of the designation. At the same time, some companies begin to use the designation even before the registration of the trademark, because they do not want to delay the start of the manufacture and the sale of the products. In this case, it is possible to claim for the termination of the use of the trademark, when it is similar to the one that is already protected. It should be noted that such claims may be addressed to the holders of the already registered designation as well. Despite the high skills of the specialists carrying out an examination of the trademark, the designations that can confuse the consumers are registered sometimes. The norms of the Russian legislation stipulate a pre-court procedure for settling the disputes regarding the trademarks. Thus, the right holder (or the entity representing itself to be such) is entitled to address to the alleged violator of the rights with a request to terminate committing particular actions, and possibly to claim for money damages. In this case, to identify the real holder of the designation means to understand whether the claims lodged are legitimate or whether they are illegal machinations and fraud.
How to identify a right holder of the trademark
As it turned out, it is usually not possible to identify the holder of the trademark judging from the information placed on the package of the product. Yes, the cases, when the company indicates directly to the fact that it possesses the exclusive rights are possible. But in the majority of cases, the very product does not contain such information.
The Rospatent’s website has the Register of the Registered Trademarks and Service Marks. This is a public document, however, carrying out a search using it is quite difficult, since it requires knowing a number of the document, such as the trademark or the application. A more convenient search system operates in an open access mode on the website of Zuykov and Partners. To carry out the search, it is enough to enter the name of the mark and to select an intended class of the ICGS regarding which the designation is registered. This service operates only on the basis of a database of the registered trademarks.
In the case, when the right holder’s search is carried out at the stage of a preliminary registration of the designation, it is also advised to carry out a complete search, which includes the database of the applications containing the similar designations. At the request of a client, the lawyers of Zuykov and Partners, while using their specialized resources, carry out an advanced search, which allows finding the similar trademarks and/or applications, identifying their right holders, and, if necessary, assessing the chances to the registration of the trademark.